Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

FINAL OFFICE ACTION

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

Issue date:  January 27, 2020

INTRODUCTION

This Office action is in response to applicant’s communication filed on December 5, 2019.

In a previous Office action dated June 5, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.  In addition, applicant was required to satisfy the following requirement:  disclaim descriptive wording in the mark.

Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: disclaimer of descriptive wording in the mark.  See TMEP §§713.02, 714.04. 

For the reasons set forth below, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Section 2(d) Refusal – Likelihood of Confusion

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

In the first office action, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4249267 (“EL PASEO INN”).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously attached registration.

The applicant’s mark is “PASEO CARIBBEAN FOOD” for use with “Catering services; Rental of banquet and social function facilities for special occasions, namely, private parties; Restaurant services” in International Class 43.

The registrant’s mark is “EL PASEO INN” for use with “Bar services; Restaurant services” in International Class 43.

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis:  (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services.  See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.

Similarity of Marks

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

And where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

The marks are similar in sound, appearance and meaning because of the common dominant wording “PASEO” in both marks.

The only differences between the marks is (1) the addition of “EL” and “INN” in registrant’s mark, and (2) the addition of “CARIBBEAN FOOD” in applicant’s mark.  These differences do not change the commercial impression of the marks.

Applicant argues that the marks are different in appearance, sound, meaning and commercial impression.  The examining attorney is not persuaded.

Applicant argues that the marks should be viewed in their entirety and all components of the mark should be given appropriate weight.  In the present case, the applicant’s entire mark is “PASEO CARIBBEAN FOODS” and registrant’s mark is “EL PASEO INN”. 

First, marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). 

And although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).

Here, as further evidenced below, the common significant and dominant feature of both marks is the term “PASEO” which is translated from Spanish to English by the applicant to mean “a leisurely walk or stroll” and by the registrant to similarly mean “the stroll” or “the walk”. 

Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

Here, the applicant’s mark and the registrant’s mark both contain the dominant term “PASEO” creating a similar overall commercial impression and thus confusingly similar.

Second, the word “EL” at the beginning of registrant’s mark translates from Spanish to English to mean “The” as again evidenced by the attached translation from SpanishDict.  When comparing similar marks, the Trademark Trial and Appeal Board has found that inclusion of the term “the” at the beginning of one of the marks will generally not affect or otherwise diminish the overall similarity between the marks.  See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE “virtually identical” marks; “[t]he addition of the word ‘The’ at the beginning of the registered mark does not have any trademark significance.”); In re Narwood Prods. Inc., 223 USPQ 1034, 1034 (TTAB 1984) (finding THE MUSIC MAKERS and MUSIC-MAKERS “virtually identical” marks; the inclusion of the definite article “the” is “insignificant in determining likelihood of confusion”).

Here, the addition of “EL” or “the” at the beginning of registrant’s mark does not diminish the overall similarity between the marks and is insignificant in determining the likelihood of confusion between the marks.  Thus, “EL PASEO” and “PASEO” are virtually identical.

Third, with regard to the addition of “INN” at the end of the registrant’s mark and “CARIBBEAN FOOD” at the end of applicant’s mark.  Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

Here registrant has disclaimed “INN” because it is descriptive of its services, and applicant has disclaimed “CARIBBEAN FOOD” because it is descriptive of its services.  Thus the terms “INN” and “CARIBBEAN FOOD” are less significant and less dominant when comparing the marks. 

When comparing the marks in their entirety, the additional wording “EL” and “INN” in the registrant’s mark and “CARIBBEAN FOOD” in applicant’s mark are less significant and less dominant to the overall commercial impression, leaving “PASEO” the common dominant focus of both the marks.

Applicant further argues that the addition of “EL” and “INN” creates a different commercial impression.  That the addition of “EL” to “PASEO” gives the impression that the goods originate from Spanish speaking countries, in this case Mexican food.  And the addition of “INN” which means “an establishment for lodging and entertaining travelers” or “tavern”, creates the impression of an indoor setting compared to applicant’s mark which creates an impression of an outdoor walk.  Further, the addition of “CARIBBEAN FOOD” to the end of applicant’s mark creates a different impression by specifying a regional type of cuisine.  The examining attorney is not persuaded.

The applicant has provided an almost identical English translation of the Spanish word “PASEO” as the registrant, which provides evidence that applicant concedes that the word is or originates from Spanish and has the same meaning as used by the registrant, namely, a walk or stroll. (See also attached evidence from Merriam-Webster and SpanishDict regarding the translation and origination of “PASEO”.)  Further, as evidenced by applicant’s attached website, “Paseo is a Seattle Caribbean Latino sandwich shop” and is known for its “Cuban Roast” sandwich.  Evidence provided in applicant’s response also supports this and indicates that the applicant is primarily known for its version of a Cuban sandwich.  By applicant’s logic, because “PASEO” is a Spanish word, a consumer would have the impression that the goods originate from Spanish speaking countries, which could include Mexican food as well as Latino and Cuban inspired food.  Further, the attached evidence shows that Spanish is spoken in several Caribbean countries including Cuba, Dominican Republic, and Puerto Rico as well as in Mexico and Central America.  And thus adding “EL” or the Spanish translation of “the” in front of registrant’s mark, and the disclaimed wording “CARIBBEAN FOOD” to applicant’s mark does little to change the similar overall commercial impression of the marks, or the impression that both the applicant’s and the registrant’s goods originate from or are inspired by Spanish speaking countries which includes countries in the Caribbean.

Additionally, as evidenced by the attached from Merriam-Webster and conceded by applicant, “INN” is also defined as “tavern”.  And as further evidenced by Merriam-Webster, “tavern” is defined as “an establishment where alcoholic beverages are sold to be drunk on the premises” which fully describes registrant’s services, namely, bar and restaurant services.  The attached evidence from applicant’s website indicates they also provide alcoholic beverages, have a happy hour menu and certain locations have a full service Tiki Bar.  Thus the descriptive nature of the disclaimed term “INN” at the end of registrant’s mark does not change the overall similar commercial impression between the marks or reduce likelihood of confusion with applicant’s marks.

Applicant also provided evidence of just two registered marks where the addition of the descriptive terms overcame the similarity of the marks and used to distinguish between the different types of restaurant services and/or different types of cuisines.  The examining attorney is not persuaded.

Prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017).  Each case is decided on its own facts, and each mark stands on its own merits.  In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).

 Applicant also argues that the fame of the respective marks should be regarded as the “dominant factor” in determining likelihood of confusion.  The examining attorney is not persuaded.

As applicant notes, the TTAB has stated that “As the fame of a mark increases, the degree of similarity between the marks necessary to support a conclusion of likely confusion declines.”  Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741, 1750 (TTAB 2006).  The TTAB also stated in that case that “there is no evidence in the record of any third-party use of similar marks for related goods and services.  Accordingly, the STARBUCKS and STARBUCKS COFFEE marks are strong and entitled to a broad scope of protection.” Id.  Additionally, “the Federal Circuit has stated repeatedly that there is no excuse for even approaching the well-known trademark of a competitor inasmuch as ‘[a] strong mark … casts a long shadow which competitors must avoid.’ Kenner Parker Toys Inc., supra at 1456.”  Id.

In the present case, the registrant’s mark “EL PASEO INN” and applicant’s two applied-for marks “PASEO” and “PASEO CARIBBEAN FOOD” are the only marks on the register with the dominant wording “PASEO” for bar and restaurant services.  The registrant has been using this mark since 1930, and according to the attached evidence from their website, have become quite famous and claim to have to have “served many special guests over the years, including civil rights leader Cesar Chavez and Presidents George H. W. Bush and Bill Clinton.”  Because there is no record of third-party use of similar marks for similar services and registrant has acquired substantial fame, thus the degree of similarity between the marks necessary to support a conclusion of likelihood of confusion declines.  To paraphrase the TTAB, registrant’s mark is a strong mark that casts a long shadow which competitors such as the applicant must avoid.

Lastly, the overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

Accordingly, the marks are considered similar for likelihood of confusion purposes.

Similarity of Services

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

The applicant’s services, namely, “Catering services; Rental of banquet and social function facilities for special occasions, namely, private parties; Restaurant services” are closely related to or identical to registrant’s services, namely, “Bar services; Restaurant services” because both are likely to involve the same channels of trade and the same classes of consumers. 

Applicant has provided no arguments related to the similarity or dissimilarity of services, presumably conceding the similarities and relatedness.

Here, both the applicant and registrant provide identical “restaurant services”.  Registrant also provides “bar services”, and although applicant has not applied for separate “bar services” the attached evidence from their website shows that they do offer a full bar at select locations. 

Additionally, the attached Internet evidence, consisting of websites from the registrant (El Paseo Inn), Barrio, Guapo’s, Foundation Restaurant & Bar, Bon Temps Grill, The Porch, Stanfords, Palisade, Lola, Big Whiskey’s and Oyamel, establishes that the same entity commonly provides the relevant services and markets the services under the same mark.  Specifically, entities that provide restaurant services also commonly provide bar services, catering services and/or rental of banquet and social function facilities for special occasions.  Thus, applicant’s and registrant’s services are considered highly related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

Accordingly, registration is refused under Trademark Act Section 2(d) based on likelihood of confusion.

For the reasons discussed above, the Section 2(d) refusal is maintained and made FINAL.

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

RESPONSE GUIDELINES

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

/Marta Stadeli/

Examining Attorney

Law Office 123

(571) 272-6747

marta.stadeli@uspto.gov

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

United States Patent and Trademark Office (USPTO)

USPTO OFFICIAL NOTICE

Office Action (Official Letter) has issued

on January 27, 2020 for

U.S. Trademark Application Serial No. 88352995

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

(1)  Read the official letter.

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

/Marta Stadeli/

Examining Attorney

Law Office 123

(571) 272-6747

marta.stadeli@uspto.gov

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 27, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”